Were competing women’s magazine titles so confusingly similar that only one could obtain registered trade mark status?
Topic: Brands
Who: Mizz (IPC) v Ms (Liberty Media for Women LLC)
Where: The UK Trademarks Registry
When: June 2004
What happened:
Liberty Media for Women ("LMW") had used the name Ms for feminist periodicals since 1972. ITC launched the Mizz teenage girls' title in 1985.
In summer 2003, LMW and IPC clashed over each company's attempt to register its respective magazine title as a trademark. IPC attempted to register Mizz for "magazines for teenage girls and young women" and "electronic publications in magazine format." LMW tried to register the Ms name for "periodical magazines for women."
Last summer, the Trademark Registry took the view that there was no likelihood of confusion amongst the buying public between the two titles and gave the green light to both trademark applications proceeding to registration.
On the appeal, the original decision has been upheld. This is on the basis, the trademarks judge said, that "in my view, Ms conveys a rather staid image whereas Mizz conjures up something altogether zanier in relation to the products."
The judge thought it was not surprising that publications operating in the same general area might be available under similar names. He felt, however, that the consumer was well able to distinguish one title from another and that publishers who operate in these areas must be prepared to accept as a commercial risk the possibility of a limited degree of confusion.
Why this matters:
Where brands are similar, then the first in line for registration is likely to win out over the second, if it can be said that there is a likelihood of confusion between the two. Here, the Court has taken the view that one has to apply the test of likelihood of confusion in a different way depending on the relevant industry. For these two magazine titles, even if there might have been some degree of possible confusion, so long as there was sufficient distinction between the two marks, both could coexist in the court's view.
